Takeaway: A petitioner’s failure to identify any structure in the specification of the challenged patent that corresponds to the recited function of means-plus-function limitations will likely result in a denial of institution.
In its Decision, the Board denied the Petition, finding that Petitioner had not established a reasonable likelihood of prevailing with respect to any challenged claim. “The ’280 patent generally relates to a method and system for managing the transfer of rights associated with digital works using shared state variables.” In particular, the ’280 patent discloses “a method and system for transferring rights associated with an item— presumably a digital work—from a supplier to a consumer.”
The Board began with claim construction, applying the broadest reasonable interpretation in light of the specification. Terms are given their ordinary and customary meaning as understood by a person of ordinary skill in the art. The Board construed the term “repository” as well as a number of means-plus-function limitations.
With regard to “repository,” the Board noted that an explicit definition of the term was not provided in the specification of the ’280 patent, but that the Stefik patent, which was incorporated by reference in the ’280 patent, provided such an explicit definition. The Board disagreed with Petitioner’s proposed construction for the term, finding the proposal would render superfluous other claim language. In particular, Petitioner’s proposal further characterized a repository beyond the explicit definition “as enforcing both meta-rights and usage rights,” while the claims already recited a “meta-right … enforceable by a repository.” Finally, the Board gave greater weight to the construction in the related inter partes review proceedings than to the district court construction because the Board applies the broadest reasonable interpretation standard. Thus, the term “repository” was construed to mean “a trusted system which maintains physical, communications, and behavioral integrity, and supports usage rights.” “Physical integrity” was further defined as “preventing access to information by a non-trusted system”; “communications integrity” as “only communicates with other devices that are able to present proof that they are trusted systems, e.g., by using security measures such an encryption, exchange of digital certificates, and nonces”; and “behavioral integrity” as “requiring software to include a digital certificate in order to be installed in the repository.”
Turning to the terms that were presumably means-plus-function limitations, the Board found that Petitioner did not identify any corresponding structure but argued instead that the ’280 patent “does not identify any specific structure that corresponds to each means-plus-function limitation, and there are no algorithms or other description of software that function as each means-plus-function limitation.” (internal quotations omitted). Petitioner suggested that should the Board institute trial, the terms should be construed to essentially encompass any structure capable of performing the recited function. Patent Owner argued that Petitioner’s “failure to analyze the claims, based on the proper construction of the corresponding structure of the means-plus-function limitations recited in the challenged claims, is fatal to each ground against those claims.” The Board agreed, noting that while Petitioner “addresses the recited functions,” Petitioner did not “identify any structure in the ’280 specification that corresponds to the limitations” and accordingly did not demonstrate a reasonable likelihood of prevailing.
Addressing the prior art, the Board found that Petitioner had not established that the Ginter reference discloses the recited “repository” because Petitioner and its expert applied an improper claim construction for the term. With regard to the remaining grounds, the Board found that Petitioner had not applied the teachings of the Wiggins reference to remedy the deficiencies of Ginter. Thus, the Board denied institution of the remaining grounds for the same reasons discussed above.
Apple Inc. v. ContentGuard Holdings, Inc., IPR2015-00354
Paper 12: Decision Denying Institution of Inter Partes Review
Dated: July 1, 2015
Patent: 7,774,280 B2
Before: Michael R. Zecher, Benjamin D. M. Wood, and Georgianna W. Braden
Written by: Braden
Related Proceedings: ContentGuard Holdings, Inc. v. Amazon.com, Inc., No. 2:13-cv-01112 (E.D. Tex.); Google, Inc. v. ContentGuard Holdings, Inc., No. 3:14-cv-00498 (N.D. Cal.); ContentGuard Holdings, Inc. v. Google, Inc., No. 2:14-cv-00061 (E.D. Tex.); IPR2015-00351; IPR2015-00352; IPR2015-00353; IPR2015-00355; IPR2015-00356; IPR2015-00357; and IPR2015-00358